Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 20
`Entered: January 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ST. JUDE MEDICAL, LLC,
`Petitioner,
`
`v.
`
`THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
`Patent Owner.
`
`Case IPR2017-01338 (Patent 6,502,576)
`Case IPR2017-01339 (Patent 6,164,283)1
`
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 Although the proceedings have not been consolidated, this Order addresses
`issues that are common to each of the above-referenced proceedings. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`
`Tel: 571-272-7822
`
`Paper 20
`Entered: January 12, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ST. JUDE MEDICAL, LLC,
`Petitioner,
`
`v.
`
`THE REGENTS OF THE UNIVERSITY OF CALIFORNIA,
`Patent Owner.
`
`Case IPR2017-01338 (Patent 6,502,576)
`Case IPR2017-01339 (Patent 6,164,283)1
`
`
`
`
`
`
`
`
`
`
`Before PATRICK R. SCANLON, JAMES A. WORTH, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`1 Although the proceedings have not been consolidated, this Order addresses
`issues that are common to each of the above-referenced proceedings. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`
`
`IPR2017-01338 (Patent 6,502,576)
`IPR2017-01339 (Patent 6,164,283)
`
`
`On July 20, 2017, the Board granted Patent Owner, The Regents of
`
`the University of California (“The Regents”), authorization to file a motion
`
`to dismiss based on Eleventh Amendment immunity and postponed, by two
`
`months, the due date for the Patent Owner Preliminary Response, i.e., to
`
`October 16, 2017. Paper 7. On July 25, 2017, The Regents filed “Patent
`
`Owner’s Motion to Dismiss.” Paper 9. On August 1, 2017, Petitioner, St.
`
`Jude Medical, LLC (“St. Jude”), filed “Petitioner’s Opposition to Motion to
`
`Dismiss.” Paper 13. On August 8, 2017, The Regents filed “Patent Owner’s
`
`Reply to Opposition to Motion to Dismiss.” Paper 14. The Board denied a
`
`request from St. Jude to file a sur-reply. Paper 17.
`
`On September 12, 2017, the Board granted The Regents a second two-
`
`month extension of the due date for the Patent Owner Preliminary Response,
`
`i.e., until December 16, 2017. On November 22, 2017, the Board granted
`
`The Regents a third two-month extension of the due date for the Patent
`
`Owner Preliminary Response, i.e., until February 16, 2017.
`
`On December 29, 2017, counsel for St. Jude sent an e-mail to the
`
`Board, with carbon copy to counsel for The Regents, as follows:
`
`Petitioner wishes to apprise the panel of decisions recently
`issued by the PTAB bearing on the issue of waiver of sovereign
`immunity, including:
` -LSI Corp. v. University of Minnesota, Trial No.
`IPR2017-01068 (PTAB Dec. 19, 2017)(expanded panel);
` -Ericsson, Inc. v. University of Minnesota, Trial Nos.
`IPR2017-01186, IPR2017-01197, IPR2017-01200, IPR2017-
`01213, IPR2017-01214, IPR2017-01219, (PTAB Dec. 19,
`2017)(expanded panel).
`
`On January 8, 2018, The Regents sent an e-mail to the Board seeking
`
`a conference call to request supplemental briefing on the PTAB decisions
`
`2
`
`
`
`IPR2017-01338 (Patent 6,502,576)
`IPR2017-01339 (Patent 6,164,283)
`
`raised by St. Jude and to request a further two-month extension of the
`
`deadline for the Patent Owner Preliminary Response.
`
`On January 10, 2018, a conference call was held between Judges
`
`Scanlon, Worth, Woods, and counsel for the parties. On the call, The
`
`Regents withdrew its request for supplemental briefing but maintained its
`
`request for a further two-month extension of the due date for the Patent
`
`Owner Preliminary Response. The Regents requested, in the alternative, that
`
`any Patent Owner Preliminary Response be due one month from a decision
`
`on the pending motion to dismiss. The Regents also requested, in the
`
`alternative, that the panel stay these proceedings pending decision by
`
`another Board panel on whether to stay the University of Minnesota
`
`proceedings, i.e., in view of possible appellate review of the decisions in
`
`those proceedings. See, e.g., Ericsson Inc. and Telefonaktiebolaget LM
`
`Ericsson, v. Regents Of The University of Minnesota, Cases IPR2017-01186,
`
`-1197, -1200, -1213, -1214, -1219 (PTAB Jan. 5, 2018) (Paper 17). St. Jude
`
`opposed the requests for a further extension or stay. St. Jude argued that it
`
`would be prejudiced by a further extension or stay of these proceedings. St.
`
`Jude stated that it would like the Board to resolve these proceedings and that
`
`there is a co-pending district court proceeding (which is not subject to a
`
`stay).
`
`After having already granted three extensions of the due date for the
`
`Patent Owner Preliminary Response, we decline to grant a further extension
`
`thereof or to stay these proceedings. We are mindful of the timing of the co-
`
`pending district court proceeding.
`
`
`
`
`
`3
`
`
`
`IPR2017-01338 (Patent 6,502,576)
`IPR2017-01339 (Patent 6,164,283)
`
`
`Accordingly, it is
`
`ORDERED that The Regents’s request for a further extension of the
`
`Patent Owner Preliminary Response or to stay these proceedings is denied.
`
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`4
`
`
`
`IPR2017-01338 (Patent 6,502,576)
`IPR2017-01339 (Patent 6,164,283)
`
`PETITIONER:
`
`Matthew Smith
`smith@smithbaluch.com
`
`Zhuanjia Gu
`gu@turnerboyd.com
`
`
`PATENT OWNER:
`
`Jonathan Lindsay
`jlindsay@crowell.com
`
`Kainoa Asuega
`kasuega@crowell.com
`
`
`
`
`5
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`
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